AIA Trial-Based Estoppel

  • BASICS: “The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. 315(e)(2); see 35 U.S.C. § 325(e)(2) (same provision for post-grant reviews); AIA § 18(a)(1)(D) (“The petitioner in a transitional proceeding that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, or the petitioner’s real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding.”)
  • “Real Party In Interest” And “Privy” In AIA Have Expansive Common Law Meaning: “Congress intended that the term ‘real party in interest’ have its expansive common-law meaning.” “The focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.” “The common law aims to protect defendants in one action from later legal actions brought by related parties who are actually entitled to relief.” “Demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” “The point is not to probe RPX’s interest (it does not need any); rather, it is to probe the extent to which Salesforce—as RPX’s client—has an interest in and will benefit from RPX’s actions, and inquire whether RPX can be said to be representing that interest after examining its relationship with Salesforce.” Applications In Internet Time (Fed. Cir. 07/09/18) (vacating PTAB FWDs for Board to reconsider, under common law principles, whether RPX time barred on account of litigation defendant being “real party in interest,” considering for example that “RPX can and does file IPRs to serve its clients’ financial interests, and that a key reason clients pay RPX is to benefit from this practice in the event they are sued by an NPE,” and evidence that “suggests that RPX may have filed the three IPR petitions, in part, to benefit Salesforce,” and other theories (e.g., apparent authority) identified in Wright & Miller treatise); Wi-Fi One (Fed. Cir. 04/18/18) (2-1) (aff’g PTAB decision of no privity of real party in interest: “The interpretation of the concepts of privity and real party in interest set forth in the PTO’s Office Trial Practice Guide and applied by the Board is consistent with general legal principles.” Implying that the petitioner must have had control over the prior district court litigation.)